All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Sunday, October 31, 2010

Earlier this year, the IPWatchdog blog ran a series of interviews with Federal Circuit Chief Judge Rader (here) and former Chief Judge Michel (here). Last week, IPWatchdog ran a follow-up interview with C.J. Michel (here)
on the topic of effective appellate advocacy. I found two of Michel's
comments particularly interesting: don't waste time in your brief
telling the judges what the law is; and trial counsel isn't necessarily
the best counsel for an appeal.

If you're a Federal Circuit junkie and can't get enough of these guys, you might be interested in another interview, this joint interview
with Rader and Michel. The article is part of a special patent reform
issue of the magazine "Medical Innovation & Business."

Thursday, October 28, 2010

Takeaway: A district court found that multiple documents which described a single system were properly considered a single anticipatory prior art system under the public use prong of § 102(b). IP Innovations LLC v. Red Hat, Inc., 2:07-cv-447, E.D. Tex., October 13, 201.

Details:

The district court in IP Innovations LLC reviewed a jury verdict of anticipation. The jury found that the plaintiff's patent was anticipated by a software system of virtual workspaces created by a university student (referred to as the "Chan system"). As evidence of anticipation, the accused infringer relied on two separate documents which described the Chan system: a publication of the student's thesis; and a published paper by the student's supervisor and a reader of the thesis.

The patentee challenged the jury verdict. While not disputing that the prior art system met every element of the asserted claims, the patentee argued that the prior art system could not anticipate because it was a "blending of two separate articles by different authors."

The court found that substantial evidence supported the jury verdict. An expert for the accused infringer had testified that "the illustrated figures and technical details
showed that the two papers described the same Chan system. Therefore, he used the information in both papers
to recreate the Chan system." The court found that anticipation under the public use prong of § 102(b) was proper:

"[Alnticipation must be found in a single reference, device, or process." Studiengesellschaji Kohle, rn.b.H v. Dart Indus., Inc., 726 F.2d 724, 726-27 (Fed. Cir. 1984). Dr. Wilson used a single device, the Chan system, to show anticipation. Dr. Wilson did not rely on the articles as separate anticipatory references. He only used the articles to understand how the Chan system functioned. This court sees no error in using multiple references to describe a single prior art system for the purpose of showing anticipation.

The patentee also argued that the accused infringer had never proved that the Chan system existed prior to the § 102(b) bar date. The court found that the evidence did support a date of public use before the bar date of March 25, 1986:

Chan's thesis was published in July 1984, and his professor's paper was published in 1983. Chan's thesis explains that his system was "used in a fourth year undergraduate course" and "approximately 100 students have been exposed to the system over the course of 8 months." Therefore, the papers indicate that the Chan system existed and was in public use at least by 1984.

My two cents: Patent prosecutors may be surprised by this use of multiple documents in an anticipation context. That's because we deal almost exclusively with rejections based on publication. Anticipation in the public use or sale context works slightly differently, since anticipation requires a "single reference, device, or process" (as stated in the Studiengesellschaji decision relied upon in IP Innovations). That is, for public use or sale, it's the device/system/process that anticipates, and the number of documents which describe the prior art unit is irrelevant.

Occasionally an Examiner will issue a public use or sale rejection based on sale/use of the Applicant's own system. Usually this information comes from the Applicant's IDS, but occasionally the Examiner will dig it up on his own from an Internet archive. If this happens to you, you may be fighting an anticipation rejection which properly relies on multiple documents, as happened here in IP Innovations.

Prosecutors will be glad to know that the multiple-document-anticipation doctrine is much more limited under the other prongs of 102. These limits are described in MPEP 2131.01 - Multiple Reference Rejections. In a future post, I'll review some BPAI decisions that involve anticipation with multiple documents.

Trivia: The district court judge in IP Innovations was Judge Rader of the Federal Circuit, sitting in designation while visiting the Eastern District of Texas.

Wednesday, October 27, 2010

Takeaway: We all know that inequitable conduct requires materiality and intent. But I think sometimes we forget that in the end, it comes down to balancing the equities – materiality vs. intent – so finding a little of each isn't always enough. The recent district court opinion in the remanded Larson v. Aluminart case is a good example of this. The district court "found that Larson intentionally and materially deceived the Reexam Panel," and yet went on to conclude there was no inequitable conduct. "Balancing the diminished materiality of the omitted information and Larson's intent, the Court finds that Larson's conduct was not so egregious as to warrant holding its patent unenforceable." Larson Mfg. Co. of S.D., Inc. v. Aluminart Products Ltd., 2010 WL 2990648 (D.S.D. Jul 29, 2010) (NO. CIV 03-4244).

Details: The Federal Circuit ruled on the inequitable issued earlier this year in Larson Mfg. Co. of South Dakota, Inc. v. Aluminart Products Ltd., 559 F.3d 1317, 1341 (Fed. Cir. 2009). At issue was a failure to disclose five items: two office actions from a co-pending continuation application as well as three prior art references.

The lower court found materiality and intent with respect to each of the five items, and found inequitable conduct after balancing the equities. On appeal, the Federal Circuit found partial error in the lower court's findings: the three undisclosed items of prior art were cumulative, not material, but the office actions were material. The Federal Circuit then remanded back to the lower court with instructions to determine whether the patentee withheld the two office actions with deceptive intent. The lower court was also instructed to take into account that the German patent DE `478 was cumulative when considering the materiality of the Fourth office action.

The Court believes that the Fourth Office Action is less material after the Federal Circuit's holding that the German patent DE `478 is cumulative of the Kissinger patent and thus not material. The Fourth Office Action still is material, however, because it was an adverse decision based on a different explanation and interpretation of the Kemp patent and other prior art, and thus it was "clearly information that an examiner could consider important.

The district court also found deceptive intent once again:

The Court still believes intent to deceive the Patent Office is inferred by Larson's failure to disclose Examiner Johnson's adverse September 21, 2005 and June 23, 2006 Office Actions in the `039 Continuation. ... The inference of deceptive intent is the most reasonable inference able to be drawn from the evidence ...
After all of the briefing that has been done in this case, the Court is still left without an explanation for a knowing failure to disclose, and this supports an inference that Larson intended to mislead the Reexam Panel.

However, the patentee's conduct was not egregious when the equities were balanced:

"Under the balancing test, `[t]he more material the omission or the misrepresentation, the lower the level of intent required to establish inequitable conduct, and vice versa.'" Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1364 (Fed.Cir. 2007) (quoting Critikon, 120 F.3d at 1256).
Having found that Larson intentionally and materially deceived the Reexam Panel, the Court proceeds to balance the equities. After careful consideration, the Court still finds the Third Office Action to be highly material but the materiality of the Fourth Office Action has been diminished by the appellate determination that the DE `478 patent information is not material. Balancing the diminished materiality of the omitted information and Larson's intent, the Court finds that Larson's conduct was not so egregious as to warrant holding its patent unenforceable.

My two cents: "The Court is still left without an explanation for a knowing failure to disclose." Wow. Maybe I'm reading too much into this single sentence. But I read that as not simply no credible explanation, but no explanation whatsoever, not even "I don't remember." I'd say in this situation, deceptive intent really is the "single most reasonable inference able to be drawn from the evidence."

But deceptive intent isn't enough. The patentee came out okay because the two office actions were of "diminished materiality."

I wonder how often this fact pattern shows up: Yes to deceptive intent; No to Inequitable Conduct.

Tuesday, October 26, 2010

Takeaway: In evaluating non-analogous art arguments, the BPAI considers evidence that references are in different PTO classification to be "weak." The Board has cited two different Federal Circuit decisions as support for this proposition:

Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).

While Patent Office classification of references and the
cross-references in the official search notes of the class definitions
are some evidence of “nonanalogy” or “analogy” respectively, the
similarities and differences in structure and function of the inventions
carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

Details: I found four decisions in which the BPAI rejected non-analogous art arguments based on classification evidence.

The claims in Ex parte Gargiulo were directed to a postage metering system which could be controlled through voice commands received through a telephone interface. The claimed system also converted the voice commands to text and printed the text. The Examiner combined three references: a postage metering system having voice recognition; a text-to-speech converter having a telephone interface; and a postage metering system which printed non-voice messages.

The Applicant made a very cursory non-analogous art argument:

The rejections should be reversed because the references are not in an art analogous to that of the invention as presently claimed. Appellant respectfully submits that the cited references are in extremely non-analogous art areas and that there is absolutely no motivation to combine the references. See Wang Lab., Inc. v. Toshiba Corp., 993 F. 2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993.)

The Board affirmed the rejection, noting that it was obvious to include known elements and techniques from the text-to-speech system in the voice-controlled postage metering system to yield predictable results. The Board also dismissed the non-analogous argument:

While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the similarities and differences in structure and function of the inventions carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

The claims in Ex parte Mittleman
were directed to luggage with a towing handle. The Examiner combined a
portable cooler with a multipurpose cart. The Board dismissed the
Applicant's classification argument:

Appellants
contend that the USPTO classification system places baggage and coolers
in different classes, illustrating that the USPTO considers coolers and
pieces of baggage “as representing different fields of endeavor.” Reply
Br. 8. In this attack on the definition of “baggage,” Appellants appear
to be arguing that a cooler is not analogous art to baggage. Regarding
analogous art, evidence of classification in different categories by
the PTO “is inherently weak ... because considerations in forming a
classification system differ from those relating to a person of ordinary
skill seeking solution for a particular problem.” In re Mlot-Fijalkowski, 676 F.2d 666, 670 n. 5 (CCPA 1982). Appellants’ argument fails to demonstrate that coolers are nonanalogous art to baggage.

The claims in Ex parte Nelson were directed to an electrically heated asphalt paving system having a bounding layer and an outer insulation layer. The Examiner combined an asphalt paving system reference without the claimed layers with a reference teaching a thin sheet electric heater having the claimed layers. The Applicant made a spirited non-analogous art based on classification:

The record in this application has finally been clarified by the Examiner conceding that Borrup (U.S. Patent 4,384,401) is not analogous art based upon the fact that Borrup is directed toward solving a problem that is different from the particular problem with which the Applicant was concerned. This should come as no surprise as Borrup is directed to a method of mass producing heater elements in class/subclass 29/611, whereas the parent patent to the present application is classified in class/subclass 404/118. But the Examiner now holds that Borrup is analogous art because "Borrup appears to be in the field of endeavor" of Applicant since "Borrup teaches the use of an electric heater, bonded to a metallic substrate to form a heated plate to warm various materials." The Examiner has misapplied the law in reaching the conclusion that Borrrup is analogous art based upon it being supposedly in the same field as Applicants' endeavor. Based upon the Examiner's flawed reasoning, a determination of whether a reference is in an Applicants' field of endeavor relates to what it discloses without any regard to where that disclosure is hidden away in the vast sea of information constituting the U.S. Patent database.
(Emphasis added.)

The Board dismissed the non-analogous art argument:

Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982). Thus, Appellant's argument directed to the USPTO's classification of Borrup is not persuasive.

The claims in Ex parte Matus were directed to a plasma torch cutting system with a control system. The control system for the torch included a serialization circuit. The Examiner combined one reference teaching a plasma torch with another reference teaching a serialization circuit as used in a plasma coating system. The Applicant made a detailed non-analogous argument:

Second, despite the assertion that serialization merely comprises common experience in plasma cutting torch control, the Examiner has provided no examples of the commonality of or use of a serialization circuit with a plasma cutting system. Instead, the Examiner relies upon the disclosure of a serialization circuit in a coating system, which as stated above, is very different from cutting systems and has very little in common with a plasma cutting system. A review of the divergent classification of the two cited references is evidence of such. That is, Schneider et al. (similar to the present application) is classified under the broad class of "219 - Electric Heaters" whereas Schutz is classified under the broad class of "250 - Radiant Energy." Thus, the cited references are not merely different in respect to their subclasses, but in regard to their much broader class, and as such, the search of one class of for one patent would not be likely to uncover the other patent. Merely because the references have a common word (i.e., "plasma"), they are not necessarily in the same art ...

The Board summarily dismissed the argument, noting that "evidence of classification of prior art in different categories by the PTO 'is inherently weak . . . because considerations in forming a
classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.' In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982)."

My two cents: Looking to classifications seems like a creative argument against obviousness, but it's simply not supported by case law. You're better off dealing with the two prong test for analogous art:

Two criteria are relevant in determining whether prior art is analogous:
(1) whether the art is from the same field of endeavor, regardless of
the problem addressed, and (2) if the art is not within the same field
of endeavor, whether it is still reasonably pertinent to the particular
problem to be solved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058,
1060 (Fed.Cir.1992) (citations omitted).Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed.Cir.1993)

Sunday, October 24, 2010

Recently I blogged about an inequitable conduct argument involving an
inventor characterization of a drawing as "prior art." Specifically,
the accused infringer cried "inequitable conduct" for non-disclosure of a
drawing in an invention disclosure form, when that drawing was
characterized in the disclosure as "prior art." (See my post here.)

The
district court in that case ignored the infringer's argument, but why
give the infringer any ammunition by using the term "prior art" in the
disclosure context? Certainly we want inventors to provide a list of any
references they're aware of which may be relevant – but an attorney
should be involved in the determination of what is or is not prior art.

“Prior
Art” is a legal conclusion that should be made by an attorney, a judge,
or the USPTO. An inventor runs the danger of making an “admission” that
a reference is Prior Art – when in fact it is not.

Thursday, October 21, 2010

Takeaway: Ex parte Reisinger involved claims to a postage meter system which include postage codes embedded in the barcode. The Applicant attacked an obviousness rejection by making a "long felt need" / "failure of others" argument. Specifically, the Applicant argued that one of the references taught that industry had not adopted the Applicant's solution. The Board was not persuaded, finding that the Applicant had not tied the lack of adoption by the US Postal Service to a "problem in using the postage codes."

The technology for this application was postage metering. The claims on appeal were directed to a postage metering device which receives delivery options (e.g., overnight delivery, signature required, etc.), determines a specific postage code representing these options, and prints a barcode which includes the postage code.

The Examiner rejected for obviousness, combining three references: the Uno patent, which disclosed a mail processing device receiving delivery options and selecting a postage class; the Guenther patent, which disclosed printing a barcode; and a Technical Advisory memo to the U.S. Postal Service which noted that postage code barcodes were under consideration for adoption by the USPS.

The Applicant noted that the USPS memo which discussed possible adoption of the bar codes predated the priority date of the application by six years. The Applicant then used this fact to argue the secondary consideration of "long felt need" / "failure by others":

As the Examiner stated [in the Answer], "contentions that the referenced patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. The reason why Appellant argued that the USPS minutes and the Uno reference are supportive of patentability, rather than a basis for precluding patentabilty, is precisely because they demonstrate a long standing problem with no solution. The USPS minutes are evidence that the use of product codes has been considered as a requirement by USPS for many years, without implementation. Since the Uno reference precedes the USPS minutes, this is also evidence that those of ordinary skill in the field, having knowledge of the USPS minutes, are also presumed to have knowledge of the Uno reference. Nevertheless, no implantation of requirements for product codes in the United States has occurred, and the Examiner has been unable to cite any more relevant prior art that is more contemporaneous with the filing date of the present application, that even considers such implementation.
Appellant's point is not simply that the Uno reference has an old filing date, and is not simply that the USPS has many years ago proposed the use of product codes but still has not implemented any requirements relating thereto. Appellant's point is that if this (alleged) evidence of obviousness is the only evidence of obviousness that the Examiner has been able to compile, the aforementioned circumstances associated with both of those references are more persuasive in support of patentability than in support of precluding patentability.
(Emphasis added.)

The Board was not persuaded by the "long felt need" / "failure by others" argument, primarily because the Applicant had not tied the lack of adoption of the product codes by the USPS to a "problem in using the codes."

We find the Appellant's argument that the claims on appeal are patentable because they demonstrate a long standing problem with no solution unpersuasive. This argument appears to implicate the doctrine of long felt need. Evidence of long felt need must show that the problem solved by appellant's invention was known but not solved prior to the invention. See Al-Site Corp. v. VSI Int '1, Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999). To show failure of others, the evidence must establish that others skilled in the art tried and failed to find a solution for the problem solved by the appellant. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983).
In the instant case, Appellant argues that despite a decade of considering the product code, it is still not required by the USPS as of today. However, this is not evidence that there is a "problem" in using product codes. Appellant has not established that the reason product codes are not used today is because there is a problem in using the codes. Also, the Appellant has not established that others skilled in the art tried and failed to find a way to use product codes.

The Board then affirmed the obviousness rejection.

My two cents: I agree with the result, though not the Board's particular phrasing of its rationale. Sure, the lack of adoption of the claimed used of product codes does show a problem, of some kind. But that's so vague as to be useless. There are all kinds of "problems" with adopting new features, i.e., reasons why particular features might not be adopted by industry. Cost and the feasability of implementation are probably the two biggest "problems" with adoption of new features. Yet those two "problems" point away from patentability / toward obviousness.

So, though the Board didn't come out and say it, seems to me that your evidence of long felt need / failure of others had better show that the reason others failed is something otherthan commercial considerations.

In this case, I think the Applicant missed on several counts. First, the Applicant merely showed that no solution was adopted -- which isn't the same as showing that anyone actually tried. Second, the Applicant didn't show any reason for failure at all.

Wednesday, October 20, 2010

Takeaway: The BPAI held that a proper claim construction of "curved" and "straight" must use the same perspective for both terms. The Examiner's erroneous construction interpreted "curved" using a cross-section view while using a top view to interpret "straight." Under the proper claim construction, the Board found that the combination did not teach all the elements, and so reversed the obviousness rejection. (Ex parte Saint-Gobain.)

The claim for which claim construction was at issue was directed to a conveyor belt. The belt included raised ribs on both faces, where the ribs on the first face "have a curved shape" and ribs on the second face "are straight."

The Examiner relied on Fig. 3 of the Gilbert reference for teaching both sets of ribs:

The Examiner took the position that the ribs in Gilbert were curved as seen in profile view, and also "extend straight and parallel across the belt.”

The Applicant argued that the Examiner's construction was improper:

... In making this rejection, the Patent Office appears to be applying a meaning to the claim term "wherein the ribs raised above the first face have a curved shape ... and the ribs raised above the second face are straight, [and] are parallel to each other" different than that dictated by the specification. Such an interpretation is incorrect.

According to the Applicant, the proper construction was understood according to Fig.2 of the application, which shows the sinusoidal ribs in whole lines and the straight ribs in dotted lines:

The Board agreed with the Applicant. The Board explained that the Applicant construed both “curved shape” and “straight” in the same (top view) perspective, while the Examiner construed “curved shape” in one perspective (cross-section) and “straight” a different perspective (cross-section). "Given the context of the whole claim, this [the Applicant's] construction is the proper one."

My two cents: Nothing revolutionary here, but a good angle to think about when claiming spatial relationships between claim elements.

Monday, October 18, 2010

Takeaway: In the ex parte reexamination Ex parte Three-Dimensional Media Group, an Applicant referred to the "own lexicographer" rule in arguing for a narrower meaning of the claim term "3-D image." The Board found that the specification did not clearly establish a definition contrary to the plain meaning, so the Applicant lost the claim construction argument. Furthermore, the Board found that the Applicant waived argument on plain and ordinary meaning by invoking the "own lexicographer" rule.

Two takeaways here, one for the drafting stage and one for the prosecution stage. First, if you really want to be your own lexicographer, you gotta be thinking about that when you draft the spec, so you can make sure that you do in fact provide a special definition. Second, when you get to prosecution, before you trot out own lexicographer," check to make sure that your spec really does have a clear definition that's contrary to ordinary meaning. If you don't, you're unlikely to win the "own lexicographer" argument, so consider instead arguing that a reasonable interpretation must be consistent with the specification.

The disputed claim term on appeal was "3-D image." The Examiner took the position that the term covered images which used shading, texturing, and perspective projection to give the impression of depth. The Applicant argued that the term covered only stereoscopic images, and excluded images which gave only the appearance of depth.

In arguing for a narrower meaning, the Applicant said that “an applicant may be his own lexicographer.” The Applicant filed declaration evidence in which the expert declarants referred to specific passages in the patent. The declarants opined that the patent clearly refers to stereoscopically created images:

As used in the ‘294 patent, it is unambiguous to anyone skilled in the art that the terms “3D” and “three-dimensional” refer to the stereographic imagery, where a different view is presented to each eye of the viewer. It is clear that, as used in the ‘294 patent, the terms do not refer to the use of shading, texturing, perspective projection, or other techniques employed to give the impression of depth (but no true stereoscopic depth effect) in a two-dimensional image when that single image is viewed by both eyes.

The Examiner responded in the Answer that the specification did not provide a special definition of "3-D image" so as to limit the meaning. The Examiner cited to MPEP § 2111.01: “[w]hen a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” (quoting from Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005))

The Board found that the "entire specification of the ‘294 patent does not support Appellant’s argument (or the experts’ opinions) that 3-D always means stereographic." The Board then spent eight pages analyzing the specification and the declarations to explain its conclusion. For example:

"The ‘294 patent does not consistently interchange '3-D' with 'stereoscopic 3-D.' "

"Neither of the experts opines that the term 3-D always means stereoscopic 3-D in the ‘294 patent."

"These arguments demonstrate, at most, that the ‘294 patent discloses a preferred embodiment wherein some frames in a video are converted by stereoscopy."

"The ‘294 patent nonetheless specifically disavows any 'limiting' effect based on the 'illustrative' 'description' [in the specification, which reads:] 'It is intended that all matter contained in the above description or shown in the accompanying figures shall be interpreted as illustrative and not in a limiting sense.' "

Finally, the Board explained that the Applicant's invocation of the "own lexicographer" rule implied that the Applicant did not dispute plain and ordinary meaning and had waived such an argument.

By failing to clearly argue that the plain meaning of 3-D (or three-dimensional, or three-dimensional image) is in dispute in the opening Brief, Appellant has waived that potential argument.

My two cents: I find that the "own lexicographer" rule is one of the most misunderstood doctrines in patent pros. It seems to me this Applicant didn't understand it either. Most of the arguments under the heading "Applicant May Be His Own Lexicographer" relate to interpreting terms in light of the spec.

However, the "own lexicographer" doctrine is really about redefining a term in the spec:

When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005).

I've read a lot of specs, and most don't redefine a term or provide a special definition. So what you probably want is the "broadest reasonable construction" doctrine, which is about being consistent with the spec:

The Board said that if you don't clearly argue ordinary meaning consistent with the spec on appeal, then you've waived your right to do so. Without more, you could read this as allowing for arguing both approaches in the alternative. But the way I read the opinion, the Board went further to say special meaning forecloses ordinary meaning.

In the Reply Brief, Appellant on the one hand maintains the “right to be his own lexicographer” but on the other hand, says that “Appellant is not attempting to read the limitation of stereoscopic into his claim from the specification” because the term “‘stereoscopic’ is not found in the disclosure” and “3-D” always refers to imagery where different images are presented to each eye of the viewer.” (Reply Br. 13.) This argument is confounding since a lexicographer typically seeks to establish a contrary meaning by reliance on the specification.

Finally, if you do decide to invoke the "own lexicographer" rule and argue special meaning, I strongly suggest you read this opinion to see one example of an Appellant that put in a lot of effort to do so – and still lost.

Postscript: The patentee has appealed to the Federal Circuit. I haven't seen the briefs – the Federal Circuit hasn't joined the new millenium yet by making briefs available on PACER – but I'd be surprised if they get the decision reversed.The Board's reasoning looks sound to me.

Related Posts: Bruce Horwitz of the Intellectual Property Directions blog offers his insight on this case here. Though my original version of this post mentioned only the lesson for patent prosecutors, it was Bruce who first pointed out the case also offers a great lesson in patent drafting. I updated my Takeaway to include this second point in response to Bruce's insight.

Sunday, October 17, 2010

The Inventive Step blog reports here about a new suite of PTO quality metrics recently introduced by Director Kappos.

One is "Final Disposition Compliance Rate," which involves a review of final Office Actions and Notices of Allowance for clear error – i.e., did the Examiner allow something that he shouldn't have and did the Examiner finally reject something he shouldn't have. This metric has been in use before Kappos.

But several other metrics are new. I'm particular encouraged by two of the new ones: a review of the Examiner's first search ("First Office Action on the Merits Search Review"); and a review of the Examiner's first Office Action ("Complete First Action on the Merits Review").

What exactly is the PTO going to do with these metrics? According to an official PTO description (here), the metrics will "aid in identification of their sources so that problems may be remediated by training, and so that the presence of outstanding quality procedures may be identified and encouraged."

Thursday, October 14, 2010

Takeaway: In Ex parte Kelkar, the BPAI affirmed a § 101 rejection of claims to "program products stored on a recordable media." Without explanation, the Board adopted the Examiner's reasoning that the claims read on "carrier wave storage," which was transitory and thus non-statutory under In re Nuijten.

All independent claims were rejected under § 101, including several claims of the form "A program product having computer readable code stored on a recordable media ... comprising: programmed means for ..."

The Examiner rejected the program product claims under In re Nuijten, stating that "the program products stored on a recordable medium read on carrier wave storage (see specification at page 7, lines 14-15) and therefore are not statutory." The relied-upon portion of the specification read:

These programs are contained in media 55 such as a diskette or compact disc or they are part of a communication signal received at a modem or other communications connection version of media 55. Media 55 is connected to bus 52 by an adapter 61 which may be in the form of a communications adapter.
(Emphasis added.)

The Applicant argued that

Applicants' specification does not say "carrier wave storage" which is a novel creation of the Examiner and not contemplated by applicants. One stores programs in a memory which may be solid state circuits, optical or magnetic discs. Programs may be transmitted to a memory in a computer by a communications connection as applicants' specification states but "carrier wave storage" is not real world and is not being claimed by applicant.

The Board did not address the Applicant's argument, but summarily concluded that under the broadest reasonable interpretation, "program products stored on a recordable medium" read on carrier wave storage. As authority, the Board then simply cited to In re Nuijten:

When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering nonstatutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter).

My two cents: This decision bothers me because of the lack of guidance from the Board.

The Examiner performed implicit claim construction on "recordable media" and got "carrier wave storage". Assuming the claim construction is correct, the Board should have explained (at a minimum) just exactly why "carrier wave storage" is "transitory" and thus non-statutory under Nuijten. At first glance, "storage" and "transitory" seem to be opposites. So if there is a strained or devious reading in which "carrier wave storage" is "transitory," I want the Board to explain it.

I still think the claim is invalid under the Board's current interpretation of Nuijten — but they went off track by buying into the storage angle used by the Examiner. Under the Board's reading of Nuijten, a claim that covers both statutory and non-statutory embodiments is non-statutory under § 101. The spec does say "programs can be signals." Since signals are non-statutory, that statement in the spec is fatal to the claim.

However, I'm not convinced the Board's reading of Nuijten is correct, because the Federal Circuit decision was about a claim to a signal. The Federal Circuit didn't say anything about a claim that reads on a signal and on storage.

I actually think the Federal Circuit got In re Nuijten wrong. I was instead persuaded by Judge Linn's dissent, which said that Nuijten's signal claim was valid under § 101 because it was directed to a new and useful manufacture. I was disappointed when the Federal Circuit denied an en banc rehearing.

Tuesday, October 12, 2010

Takeaway: In an attempt to render a patent unenforceable for inequitable conduct, an accused infringer looked to the Invention Disclosure Form for another patent owned by the patentee. The infringer argued that the patentee should have informed the PTO about the other patent because the Invention Disclosure Form showed that the other invention was publicly disclosed before the patent-in-suit, thus making it prior art. The district court found no inequitable conduct because the Invention Disclosure Form clearly described the disclosure date as an expected date of disclosure, and the infringer presented no evidence that an actual disclosure occurred before the filing of the patent-in-suit. Power Integrations, Inc. v. Fairchild Semiconductor Inter., 578 F.Supp.2d 698 (D.Del. 2008).

Power Integrations sued Fairchild for patent infringement. A jury found several claims valid and willfully infringed. A bench trial was held on the issue of inequitable conduct for several of the patents-in-suit.

With respect to one of the patents-in-suit, the '876 patent, Fairchild argued that Power Integrations failed to disclose to the PTO another Power Integrations patent by the same inventors, the '851 patent. Fairchild asserted that the '851 invention was publicly disclosed before the filing date of the '876 patent-in-suit, thus making it prior art under § 102(a) "known by others"

As evidence of a public disclosure date for the '851 invention, Fairchild pointed to a March 1998 date listed in the patentee's Invention Disclosure Form. Power Integrations countered this March 1998 date was merely an expected public disclosure date, and that public disclosure of the '851 invention did not actually occur until February 1999, after the application for the '876 patent-in-suit was filed.

The court found that March 1998 date relied on by Fairchild was clearly marked on the Invention Disclosure Form as "Expected Date of First Public Disclosure (Ex. Article, Customer Presentation, etc.)". The inventor signing the form testified that the date in question "is an expected date that the inventor or inventors enter as an earliest possible date that would be disclosed, just to give an indication to the attorney on the urgency of the patent ... It doesn't necessarily mean that it was disclosed at that date." The court found no evidence of an actual public disclosure of the '851 invention before the filing date of the '876 patent-in-suit, and thus granted the defendant's motion for Judgment of No Equitable Conduct for the '876 patent-in-suit.

The infringer raised another argument for why the '851 invention
should have been considered prior art. The infringer argued that the the Invention Disclosure Form of the '876
patent-in-suit included Fig. 1 of
the '851 patent in, and that the Form also described that figure as "prior art." This same
figure was included in the patent application for the '876
patent-in-suit -- but was not labeled as "prior art." This inclusion, said the infringer, was an attempt to deceive the PTO, rather than acknowledging the '851 as prior art to the '876 patent-in-suit. The opinion contained no discussion of this issue.

My two cents: The case isn't interesting for it's outcome: the court reached the right result. But as with many other cases, I find the arguments raised by the parties to be of interest. Here, the infringer tried to make something of the dates on the Invention Disclosure Form. It was critical here that the Form clearly indicated Expected Date. I should think that would be enough, such that the inventor's testimony as to the meaning of "Expected Date" was just icing on the cake. But I wonder if the outcome could have been different if the label used on the form said something other than "Expected".

And what about the figure from the '851 patent showing up with the description "prior art" in the the Invention Disclosure Form of the '876 patent-in-suit? The court didn't comment on this. I say this should not be considered an admission of prior art, because "prior art" is a legal term and inventors throw it around without appreciating the significance of the term.

On the other hand, what if an inhouse patent attorney signed the Form too? The inhouse attorney knows the term has significance. So does that extra fact turn it into an admission?

Monday, October 11, 2010

Takeaway : In Ex parte Rykowksi, the Board reversed an obviousness rejection because the Examiner did not explain how the combination produced the alleged benefit which served as the Examiner's reason to combine.

The application was directed to calibrating a display by measuring color values and then sending correction factors to the display. The portion of the claim at issue was:

(c) determining a chromaticity value and a luminance value for each registered subpixel;
(d) converting the chromaticity value and luminance value for each registered subpixel to measured tristimulus values;
(e) converting a target chromaticity value and a target luminance value for a given color to target tristimulus values;

The claim was rejected as obvious. The Examiner acknowledged that the primary reference, Greene, did not teach conversion of chromaticity and luminance values into tristimulus values as required by steps (d) and (e). The Examiner relied on a secondary reference, Cottone, for the conversion. On appeal, the Applicant's main argument was to attack the Examiner's rationale for combining.

The rationale for combining was explained in the Examiner's Answer as follows:

The reason provided for combining Greene with Cottone (i.e. to increase the precision of color/brightness values) is a valid motivation. Furthermore, the conversion of chromaticity and luminance values to tristimulus values is simply a conversion, like converting radians to degrees. Lastly, tristimulus values are more precise because the values are in one format as opposed to two (i.e. one luminance value and two chromaticity values).

The Board viewed this as two alternative rationale, and found both of them lacking.
The Board appeared to treat the first rationale as substitution – substituting the secondary reference's tristimulus values for the first reference's chromaticity and luminance values. However, the Board found that the Examiner did not explain why the combination would be expected to work better:

... the Examiner has [not] addressed or provided an explanation for how or why conversion to tristimulus values performs equally well as chromaticity and luminance values or another value conversion.

As for the second rationale – using tristimulus values from the secondary reference led to improved precision – the Board found that the Examiner had not provided an explanation for the conclusion that the combination would provide the alleged benefit.

Concerning the other rationale, i.e., precision of tristimulus values, the Examiner asserts that “tristimulus values are more precise because the values are in one format as opposed to two (i.e. one luminance value and two chromaticity values)” (Ans. 21). Again, we do not find that the Examiner has provided reasoning with rational underpinning to support the conclusion that conversion to tristimulus values increases precision for color/brightness values.

The Board reversed the rejection because the Examiner had not complied with the KSR standard by providing "articulated reasoning possessing an rational underpinning to support the combination."

My two cents: The Examiner's second rationale – increased precision – is a classic example of what I call "generic benefit." I see two ways to attack the generic benefit rationale: argue that the Examiner hasn't shown that the combination actually provides the benefit; and argue that the alleged benefit isn't really beneficial at all or is outweighed by drawbacks.

The Applicant here won on the first line of attack, and I use this type of attack frequently. Don't assume that just because the Examiner says the reference does something that it really does. I use the second line of attack less frequently – how do you say stronger/faster/cheaper isn't a benefit with a straight face? But be sure to look for drawbacks that outweigh the benefit.

I'd characterize this case as an example of the Examiner having a poor prima facie showing rather than the Applicant having a well reasoned argument. That is, I find the Applicant's argument "the Examiner didn't provide articulated reasoning" to be just as conclusory as the Examiner's reasoning, if not more.

Sunday, October 10, 2010

In the first week of November, the Federal Circuit will travel to my hometown of Atlanta to sit for oral arguments. The schedule, which includes a number of patent cases, can be found here at the 717 Madison Place blog. I'm particularly interested because the Atlanta arguments will include a BPAI case that I've been following, In re Jung.

On November 3, the IP Section of the Georgia Bar is co-sponsoring a reception and dinner to welcome the judges to Atlanta. A half-day CLE program will also be presented, as well as a case briefing on the cases to be argued. You can find information on the event here at the Atlanta Bar Association website. Note that you can register for each event separately.

Thursday, October 7, 2010

Earlier this week I blogged about Ex parte Sewald, which involved an indefiniteness rejection of "constructed in CMOS." My post stated that I disagreed with the Board's affirmation of indefiniteness rejection.

After talking with a number of folks about this post – including commenters on this blog – I've changed my mind. I now agree that the rejection was proper. But I still the case is interesting, for another reason: would a claim to a "microelectronic" embodiment be better than the CMOS claim, and if so, how to draft a claim to capture that.

I've updated my post to reflect my new thinking. The updated post is available at the original link (here).

Wednesday, October 6, 2010

Takeaway: Obviousness analysis under KSR takes "account of the inferences and creative steps that a person of ordinary skill in the art would
employ," so that routine modifications point toward obviousness. In Ex parte Rhine, the BPAI was not persuaded by the Applicant's non-obviousness argument "that it would not have been feasible to miniaturize the components of the [flashlight] mechanism taught in Mallory to put them into a wristwatch and still allow them to function."

The claim on appeal was directed to a wristwatch including a light source mounted in the watch case, and further including a timer delay means which turned off the light source after a delay.

The Examiner rejected under § 103, combining a watch having a light controlled by an external switch with a flashlight having a time delay switch. As motivation, the Examiner pointed to a teaching in the flashlight reference that the time delay switch saved battery power. The BPAI characterized this motivation as a "design incentive" or "other market force," citing to KSR.

The Applicant argued that "it would not have been feasible to miniaturize the components of the mechanism taught in Mallory to put them into a wristwatch and still allow them to function." The Board found this unpersuasive:

The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Appellant does not provide sufficient evidence that those of skill in the art could not have made a smaller version similar to the mechanism of Mallory to work in a watch. Indeed, Wegner teaches using springs in a wristwatch. (Wegner col. 2, ll. 47-50; Fig. 1, element 22). Thus,the Examiner had a reasonable basis for considering that the mechanism of Mallory, which relies on springs and valves, could have been successfully used in a watch. (Ans. 9). Appellant does not point to evidence to the contrary. Thus, we are not persuaded that the Examiner erred.

My two cents: The Board's references to "smaller version" and "miniaturization" makes it sound like there were clear differences between two references — small watch, big flashlight — and that the obviousness rationale was basically "miniaturizing electrical components to fit in a watch is a routine modification." Sounds reasonable, and I agree that this is a prima facie case which shifts the burden to the Applicant to show why that's not a routine modification. [Or to offer some other reason why the combination isn't rational.]

However, I think the Examiner's position — as expressed in the Answer — may be even stronger than as characterized by the Board. According to the Answer:

Applicant's argument that the time delay cutoff switch of Mallory is too large and bulky to be used in a watch is more a matter of scale than function. This is especially true when one notices in Figs. 1 and 3 of Wegner '871 that the electrical switch assembly shown uses a bulky, mechanical spring in the same manner as that of Mallory's '282 automatic time delay switch.Clearly, if the examiner had relied upon the time delay switch feature of an electric toaster or an egg timer then applicant's argument of non-analogous art might have been more persuasive.

Here, the Examiner seems to be suggesting that miniaturization of the flashlight mechanism was unnecessary because the electrical switch in the watch already used a "bulky" spring, rather than the miniature spring one usually associates with watches.

If both the watch and the flashlight used a similar-sized spring for the electrical switch, this reduces the amount of difference between the two, and bolsters the conclusion of obviousness.

Monday, October 4, 2010

Takeaway: The BPAI affirmed an indefiniteness rejection for a
dependent claim which required two of the structures in the independent
claim -- a container and electrodes -- to be "constructed in CMOS
technology." The Board found that a POSITA "would not be able to readily
ascertain the specific aspects of CMOS technology that are used to
construct the container configuration and electrodes and how such
technology is specifically implemented."

13. A device for identifying molecules in a carrier liquid, comprising:
a container configuration for holding the carrier liquid;
a tunable radio-frequency oscillator;
an evaluation circuit;
two
electrodes disposed in said container configuration and connected to
said tunable radio-frequency oscillator and said evaluation circuit.

The subject of the indefiniteness rejection was dependent claim 19:

19. The device according to claim 13, wherein said container configuration
and said electrodes are constructed in CMOS technology.

When the indefiniteness rejection was
first introduced, the Examiner used the "omitted essential steps"
rationale: "[T]he claims do not positively recite any specific method
steps. It is unclear as to how the device is fabricated using CMOS
technology."

The Applicant responded by introducing a
technical definition of CMOS ("a device formed by the combination of a
PMOS and with an NMOS") and a discussion of the CMOS fabrication
sequence from the textbook "VLSI Process Integration."

The Examiner maintained the indefiniteness rejection in the final Office Action, asserting that:

The
metes and bounds of this claim are unclear in that the claim does not
positively recite any specific structural limitations for the claimed
device.Is the specific device structural configuration comprising a certain metal oxide semiconductor layered structure? The
structure which goes to make up the device must be clearly and
positively specified. The structure must be organized and correlated in
such a manner as to present a complete operative device.

The
Applicant simply repeated the previous argument in the Appeal Brief.
The Examiner's Answer noted that the arguments about the meaning of the
term CMOS were not based on limitations actually recited in the claim:

Claim
19 does not recite either a NMOS or PMOS transistor element. It is
unclear as to how these additional elements are associated with the
recited container configuration and the electrodes actually recited in
the claim to form an operative device.

The
Board adopted the Examiner's position, summarily stating that a POSITA
"would not be able to readily ascertain the specific aspects of CMOS
technology that are used to construct the container configuration and
electrodes and how such technology is specifically implemented."

My two cents:
When I first read this case, I thought: "What's next – indefiniteness
rejections for dependent claims
which specify 'the network is Ethernet', because the app doesn't explain
how to build an Ethernet network?" That is, I thought the rejection was
completely off base.

But I don't work much with
semiconductors, and it turns out that my analogy to network-is-Ethernet
was misplaced. After discussing the case with various commenters on this
blog, I've revised my stance. And as a consequence, I revised this
post.

I see that "constructed in CMOS" means
made using three specific layers (Metal, Oxide, Semiconductor). And
I've been persuaded by folks with semiconductor expertise that the claim
at issue in Sewald doesn't make sense because a POSITA wouldn't
understand how the claimed elements electrode and container were
"constructed in" those particular layers.

I'm still
interested in this case, but for a different reason: I'm wondering how
to get "microelectronic" in there as a limitation. Because from reading
the spec, it appears that the invention was really directed a
microelectronic implementation. This aspect was described as follows in
the spec:

[0004] Biosensors, in which the evaluation of electronic and
physical quantities are employed as indicators in order to obtain
the desired information, also seem to be very promising for this. In
terms of process engineering, this may involve utilizing matricial
configurations of microelectronically integrated sensors, which are used as an interface between the organic substances and various electronic measurement methods.

[0025] Preferably, the container configuration and the electrodes may be produced in CMOS technology. The entire circuit, including the electronic components, can in this way be integrated particularly well on a single chip.

[0054] Especially for a microelectronic embodiment of this method, transmission measurement is preferable because the sample containers can
have very small dimensions. Moreover, better results may be expected from this type of measurement.

[0067] All the components of such an individual cell may be integrated on a chip in
CMOS technology. Furthermore, a plurality of such individual cells may
be integrated in a single configuration on a chip. The individual
outputs 4 of the individual measurement cells are then fed to a
multiplexer 22, which connects the individual outputs 4, 4' etc. to an
analog/digital converter 5 that, in turn, is connected to a signal
processor 6. The circuit components may also be integrated on the chip.

[0068] CMOS technology is most suitable for the integration on the chip.

Without some sort of microelectronics limitation, you could
easily
envision a macro-scale container and electrodes when reading the
independent
claim. And I think there's value in having a claim which gets across
"microelectronics" or "integrated circuit," in order to orient the
Examiner, judge, jury, and/or licensee.

So how do you claim the microelectronic aspect?

What about this independent claim:

A microelectronic sensor comprising: [elements in independent claim].

Microelectronic
appears only in the preamble, so it may not get patentable weight – but
it might be enough to orient the reader.

What about this dependent claim:

...wherein the container configuration is a microelectronic structure.

Would that be considered a process limitation, and thus given no patentable weight?

Would this language be treated any differently:

13. A device for identifying molecules in a carrier liquid, comprising:
a microelectronic container configuration for holding the carrier liquid; ...

I'll be watching to see if the BPAI starts using Becton. I blogged earlier (here) about several BPAI decisions that relied on the same rationale to reverse anticipation rejections. In those decisions, the BPAI cited to Lantech, Inc. v. Keip Machine Co (1994) and In re Robertson (1999) as Federal Circuit precedent. Actually, it seems that Gaus v. Conair, quoted in Becton, might be the clearest statement of the proposition.

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